115 F. 553 | U.S. Circuit Court for the District of New Jersey | 1902
It appears from the record in this case that in 1885 the Waddell Manufacturing Company was engaged in the manufacture of certain washers made from a combination of rubber, to which it applied the distinguishing name of “The Boss,” and that afterwards the said company adopted the name of the “Boss Washer Company.” Neither of said companies was incorporated. In 1886 William M. Clarke succeeded to the business of the Boss Washer Company, became the owner of the assets, and continued to manufacture the said washers, and their sale, under the name of the “Boss Washer.” It also appears that early in 1887 a controversy arose between the said Clarke and one Rosegarten in respect to the right to use this trade-mark or name, and that a decree was entered in the circuit court of the United States for this district affirming Clarke’s right thereto and his ownership in said trade-mark name. It also appears that said Clarke entered into a partnership with Andrew Bell, the defendant, for the purpose of manufacturing and selling “Boss” washers, and after the arrangement had continued for some time he made a memorandum of the agreement in these words:
“Newark, N. J., May 20, 1889. This certifies that Andrew Bell is interested in the manufacture and sale of ‘Boss’ washers, and other goods made of rubber as equal partners with me, we sharing equally the profits and losses made in said rubber goods. This partnership began November 5, 1888, and is to continue as long as may be mutually agreeable. The mill press and molds used in said business are to be paid for out of the joint funds, and belong equally to Andrew Bell and William M. Clarke. [Signed] William M. Clarke.”
The partnership was formed and continued to manufacture and put on the market “Boss” washers until March, 1891, when Clarke, retiring, sold Bell his interest in the personal property of the firm, as per schedule attached to the bill of sale. At the time of the sale it was agreed between the parties that Bell should continue to manufacture
“Where one allows the use of his trade-mark on goods manufactured by the firm, that fact alone does not prevent the use of It, and it may remain the sole property of the individual owner, and the fact that the property was used by the partnership for the partnership’s profits does not, of itself, make it the partnership’s property. What the partnership takes over as its own depends entirely on the terms of the partnership agreement.”
In the case of Kidd v. Johnson, 100 U. S. 617, 25 L. Ed. 769, one Pike was the owner of a trade-mark, and went into partnership with two of his employés. He allowed the use of his trade-mark upon packages made by the firm, but, inasmuch as he did not in terms make any assignment to the firm of his trade-mark, Justice Field, speaking for the court, said:
“The trade-mark no more became the partnership property from that fact [the user} than did the realty itself, which he also owned, upon which the business was conducted. Taking his clerks into partnership with him changed in no respect, by its terms, their relation to his individual property.”
Applying this principle to the case at bar, I am of opinion that, in the absence of express agreement, no title to the trade-mark passed from Clarke to the partnership by the agreement of May 20, 1889, nor by the bill of sale of his interest in its assets. It is urged that, by the purchase of the molds with the trade-mark name “Boss Washer” stamped therein, Bell acquired a title thereto; but the object of the purchase of said molds, adaptable only to the manufacture of wash
It is admitted by defendant that he has sold “Boss” washers contrary to the terms of the agreement, and that he was told by Clarke’s counsel to stop using the trade-mark, and that he promised, but has failed, so to do. I conclude from what has been said that the defendant, Bell, acquired no title to the trade-mark name “Boss Washer,” either by the formation or the dissolution of the partnership with Clarke; that his right to the use of the said trade-mark ceased when he neglected to comply with the terms of his agreement with Clarke in respect to price; and that thereafter he was an infringer.
The right of the complainant to bring this suit as an assignee of Clarke has not been raised, and he is entitled to a decree as prayed for.